UNITED STATES DISTRICT COURT EASTERN DISTRICT OF VIRGINIA NORFOLK DIVISION __________________________________________ ) ) ) Plaintiff and ) Counterclaim-Defendant, ) v. ) ) AOL, INC. et al., ) ) Defendants and ) Counterclaim-Plaintiffs. ) __________________________________________) I/P ENGINE, INC., Civ. Action No. 2:11-cv-512 Jury Trial Demanded I/P ENGINE’S ANSWER TO TARGET CORPORATION’S FIRST AMENDED COUNTERCLAIMS Plaintiff I/P Engine, Inc. (“I/P Engine”) hereby responds to Defendant Target Corporation’s (“Target”) First Amended Counterclaims, as follows: NATURE OF THE ACTION 142. I/P Engine admits that Target’s counterclaims purport to seek declaratory judgments of non-infringement and invalidity of U.S. Patent Nos. 6,314,420 (“the ‘420 patent”) and 6,775,664 (“the ‘664 patent”) under the patent laws of the United States, 35 U.S.C. § 101 et seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. I/P Engine, however, denies that Target’s counterclaims have merit. THE PARTIES 143. I/P Engine admits, on information and belief, that Target is a corporation organized under the laws of the State of Minnesota, with its corporate headquarters and principal place of business at 1000 Nicollet Mall, Minneapolis, Minnesota 55403. 144. I/P Engine admits that it is a corporation organized and existing under the laws of the Commonwealth of Virginia, with its principal place of business in New York, New York. JURISDICTION AND VENUE 145. I/P Engine admits that this Court has subject matter jurisdiction over Target’s Counterclaims. 146. I/P Engine admits that this Court has personal jurisdiction. 147. I/P Engine admits that venue is proper in this District for the present action. 148. I/P Engine admits that the ‘420 patent was issued by the U.S. Patent and Trademark Office on November 6, 2001, that it is the assignee of the ‘420 patent, that it holds the right to assert patent infringement against Defendants and recover for past, present, and future infringement of the ‘420 patent, and that it alleges that Target has infringed the ‘420 patent. 149. I/P Engine admits that the ‘664 patent was issued by the U.S. Patent and Trademark Office on August 10, 2004, it is the assignee of the ‘664 patent, it holds the right to assert patent infringement against Defendants and recover for past, present, and future infringement of the ‘664 patent, and it alleges that Target has infringed the ‘664 patent. COUNT I (DECLARATORY RELIEF REGARDING NON-INFRINGEMENT OF THE ‘420 PATENT) 150. I/P Engine admits that a controversy exists between Target and itself as to Target’s infringement of the ‘420 patent. 151. I/P Engine denies the allegations of paragraph 151 of Target’s Counterclaims. COUNT II (DECLARATORY RELIEF REGARDING NON-INFRINGEMENT OF THE ‘664 PATENT) 152. I/P Engine admits that a controversy exists between Target and itself as to Target’s infringement of the ‘664 patent. 2 153. I/P Engine denies the allegations of paragraph 153 of Target’s Counterclaims. COUNT III (DECLARATORY RELIEF REGARDING INVALIDITY OF THE ‘420 PATENT) 154. I/P Engine admits that a controversy exists between Target and itself as to the validity of the ‘420 patent. 155. I/P Engine denies the allegations of paragraph 155 of Target’s Counterclaims. COUNT IV (DECLARATORY RELIEF REGARDING INVALIDITY OF THE ‘664 PATENT) 156. I/P Engine admits that a controversy exists between Target and itself as to the validity of the ‘664 patent. 157. I/P Engine denies the allegations of paragraph 157 of Target’s Counterclaims. REQUEST FOR RELIEF 158. I/P Engine denies that Target is entitled to any relief, including the relief requested in the Counterclaims. JURY DEMAND I/P Engine demands a jury trial on all issues in Target’s Counterclaims. Dated: December 9, 2011 By: /s/ Jeffrey K. Sherwood Jeffrey K. Sherwood (VA#19222) Frank C. Cimino, Jr. (Admitted pro hac vice) Kenneth W. Brothers (Admitted pro hac vice) Charles J. Monterio, Jr. (VA#70206, Admitted pro hac vice) DICKSTEIN SHAPIRO LLP 1825 Eye Street, NW Washington, DC 20006 Telephone: (202) 420-2200 Facsimile: (202) 420-2201 Counsel for Plaintiff I/P Engine, Inc. 3 CERTIFICATE OF SERVICE I hereby certify that on this 9th day of December, 2011, the foregoing I/P ENGINE’S ANSWER TO TARGET CORPORATION’S FIRST AMENDED COUNTERCLAIMS, was served via the Court’s CM/ECF, on the following: Stephen Edward Noona Kaufman & Canoles, P.C. 150 W Main St Suite 2100 Norfolk, VA 23510 senoona@kaufcan.com David Bilsker David Perlson Quinn Emanuel Urquhart & Sullivan LLP 50 California Street, 22nd Floor San Francisco, CA 94111 davidbilsker@quinnemanuel.com davidperlson@quinnemanuel.com Robert L. Burns Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Two Freedom Square 11955 Freedom Drive Reston, VA 20190 robert.burns@finnegan.com Cortney S. Alexander Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 3500 SunTrust Plaza 303 Peachtree Street, NE Atlanta, GA 94111 cortney.alexander@finnegan.com /s/ Armands Chagnon Senior Paralegal 4